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Copyright & Trademark Matters

Insights and Developments in Copyright and Trademark Law

A Scandalous Mark to Some, Free Speech to Others: Federal Circuit to Decide Whether Controversial Limit on Trademark Registrations Violates First Amendment

Posted in Disparaging Marks, Lanham Act, Section 2(a), Trademark Prosecution

The Federal Circuit has decided to revisit the constitutionality of Section 2(a) of the Lanham Act in the case of In re Shiao Tam, 2015 U.S. App. LEXIS 6840 (Fed. Cir. Apr. 27, 2015). Section 2(a) of the Lanham act allows the USPTO to reject the registration of a trademark that is immoral, scandalous, or disparaging. 15 U.S.C. § 1052(a). Just a week earlier, the Federal Circuit affirmed the PTO’s rejection of Mr. Tam’s application to register the mark “THE SLANTS,” the name of Mr. Tam’s Asian-American dance rock band that is known for its intentional use of Asian stereotypes in its lyrics and imagery in order to “weigh in on cultural and political discussions about race and society.”  In re Tam, 2015 U.S. App. LEXIS 6430, *2, *19 (Fed. Cir. Apr. 20, 2015). Mr. Tam argued that this rejection was a violation of his First Amendment right to freedom of speech.

In rejecting Mr. Tam’s arguments that Section 2(a) is unconstitutional under the First Amendment, Judge Moore explained that this argument is “foreclosed by our precedent” in In re McGinley, 660 F.2d 481 (C.C.P.A. 1981).  In re McGinley dismissed a First Amendment challenge to Section 2(a) and held that “the PTO’s refusal to register appellant’s mark does not affect his right to use it” and “that no conduct is proscribed, and no tangible form of expression is suppressed” when an applicant’s trademark registration is rejected under Section 2(a).  In re McGinley further held that the Section 2(a) standard, “scandalous,” is not too vague as to bar the PTO and the courts to apply the law fairly.

Despite affirming the rejection of Mr. Tam’s registration, Judge Moore went on to write a lengthy “additional views” section that outlines in great detail why “it is time for this Court to revisit McGinley‘s holding on the constitutionality of § 2(a) of the Lanham Act,” and notes from the outset that the McGinley’s holding was “without citation to any legal authority.” Tam, 2015 U.S. App. LEXIS 6430, at *14. Judge Moore reasons that because the PTO is now entirely funded from application fees, and no longer funded by taxpayers as it was when McGinley was decided, the newer constitutional jurisprudence of the “unconstitutional conditions” doctrine may apply. Judge Moore goes on to argue that trademarks are protected commercial speech, and that a rejection is an abridgement of that speech due to the highly beneficial rights a Lanham Act registration confers on a trademark owner. Ultimately, Judge Moore concludes that Section 2(a) cannot pass constitutional scrutiny unless the Court is presented with a “substantial government interest that would justify the PTO’s refusal to register disparaging marks,” which has yet to occur. Id. at *37-38, 45 (citing Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n, 447 U.S. 557, 566 (1980)).

Following Judge Moore’s thorough argument that a Section 2(a) rejection is an unconstitutional restriction of commercial speech, it will be interesting to see how the Court will decide this question during its en banc consideration. The parties have 45 days to file briefs on the constitutional issues, with a decision to follow.

The outcome of the Federal Circuit’s en banc consideration will be influential. For example, the Washington Redskins NFL football team has been involved in a well-publicized battle surrounding its controversial name in both the courts of law and of public opinion. In the former, the Federal District Court in Virginia is considering an appeal from the Washington Redskins organization challenging the PTO’s cancellation of the “REDSKINS” trademark registration under Section 2(a) for being disparaging to Native Americans. If the Federal Circuit finds that Section 2(a) is unconstitutional, then, in a somewhat ironic twist, Mr. Tam may end up enjoying the same trademark rights and protections as the Washington Redskins.

…..and Don’t Even Think About Advertising a MARCH MADNESS Event Either!

Posted in Section 43(a), Trademark, Trademark Infringement, Trademark Licensing

Written by: Susan Neuberger Weller

It is that time of year again, coming off St. Patrick’s Day celebrations, when everyone gets on the college basketball bandwagon in the season of “MARCH MADNESS.” Brackets are being completed, college jerseys are being pulled out of mothballs, bars and restaurants are hiring extra help, and work schedules are being rearranged around televised game times so everyone can join in the fun and relive the glory days. And, just as with the frenzy surrounding the Super Bowl, there will be events of all types organized around the country to take part in the “madness.” However, as we warned you in January right before the Super Bowl, if you are planning such events, do not use “March Madness” by itself or in conjunction with other words or terms in any commercial promotions of any kind including your own events, third-party events, contests, games, product promotions, or sales unless you want the NCAA to pay you an unwanted visit.

As is SUPER BOWL, the phrase MARCH MADNESS is a federally registered trademark owned by the NCAA for use in connection with products and services related to the college basketball tournament. This gives the NCAA exclusive nationwide rights to use the term on and in connection with these goods and services and prohibits anyone else from using the term in any way that would suggest any type of association, affiliation, sponsorship, endorsement, licensed status or any other connection between it and the NCAA, when in fact no such status exists. The NCAA takes this very seriously, as do its official licensed partners, who pay millions of dollars to use MARCH MADNESS in connection with their commercial promotions.

Although the NCAA was not the originator of the “March Madness” slogan, and negotiated for a number of years to acquire the federal rights to this mark, its rights are now firmly entrenched. Moreover, it is very aggressive in pursuing unauthorized uses of MARCH MADNESS or infringing versions of this mark not only to protect its own trademark rights, but to protect the rights of its licensed sponsors.

So, feel free to show your team spirit, cheer on your alma mater at the top of your lungs, wear that old jersey, and join in all the revelry, but do not engage in any advertising or promotional activity for any products or services using MARCH MADNESS or any altered version of the mark unless you have a paid sponsorship to do so.



The Court’s Decision in the FLANAX US Trademark Dispute Gives Bayer a Headache

Posted in Lanham Act, Paris Convention, Section 43(a), Trademark

On February 6, the United States District Court for the Eastern District of Virginia reversed the US Trademark Trial and Appeal Board’s ruling in Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623 (TTAB 2014) holding that Article 6bis of the Paris Convention does not grant trademark rights that are protectable under Section 14(3) (misrepresentation of source), Section 43(a)(1)(A) (infringement of an unregistered mark) and Section 43(a)(1)(B) (false advertising) of the United States Trademark Statute (the Lanham Act). Belmora LLC v, Bayer Consumer Care AG and Bayer Healthcare LLC, 1:14-cv-00847-GBL (EDVA Feb. 6, 2015).

Bayer Consumer Care AG filed a petition with the TTAB to cancel Belmora LLC’s U.S. trademark registration for FLANAX for a naproxen sodium based analgesic on grounds that it was confusingly similar to Bayer’s FLANAX brand of naproxen sodium analgesic products.  Ordinarily, a case involving identical marks used on virtually identical products is a slam dunk for the prior user. However,  in this case Bayer owned a Mexican, but not a US, trademark registration for FLANAX, and did not sell any FLANAX branded products in the US. Rather, the Bayer naproxen sodium analgesic product available in the US was sold under the trademark ALEVE. Nevertheless, Bayer claimed that Belmora’s actions in the US were misrepresentative and created confusion among US customers as to the source of the FLANAX products sold in the US. Continue Reading

Use It or Lose It: When Can a Trademark Registered Under Section 44(e) or 66(a) Be Deemed “Abandoned” in the US?

Posted in Fraud, Trademark, Trademark Prosecution

Unlike most countries, US trademark law generally requires that a mark be in use before it can be protected. The US recognizes common law rights in unregistered marks if they have been adopted in good faith and are in actual use on a product or to provide a service to the public. The US also has a state trademark registration system as well as a federal trademark registration system. Each state adopts its own requirements for registration of a trademark, and the US Congress creates the law for federal registration.

Under federal law, a mark owned by a US based applicant must be in use on all of the goods and to provide all of the services in an application, and proof of use must be filed and accepted by the US Trademark Office before a registration will issue. However, non-US applicants are permitted to register a trademark in the US without ever having used the mark in the US if it seeks registration under Section 44(e) of the Trademark Act based upon a qualified foreign national or European Community registration or if it seeks registration under Section 66(a) based upon an international trademark registration under the Madrid Protocol. Continue Reading

Trademarks and Branding: Need Some Ideas for that New Product Name?

Posted in Intent-To-Use Applications, Searching and Clearance, Trademark, Trademark Prosecution

Written by : Susan Neuberger Weller

The New York Times Magazine had a very interesting article in its January 18, 2014 issue entitled “Call It What It Is.” The article, written by Neal Gabler, looks into the methods and ideologies used to create new product brand names. As a trademark lawyer who has been practicing for quite a while, the substance of the article was not particularly new to me. However, many businesses who struggle each day to invent new company and brand names for their businesses, products, and services may find some inspiration and creative ideas from this piece. As the article makes clear, the naming process can be a very long road and it is better to start sooner rather than later. Moreover, once a new name is chosen, and has been fully searched and cleared by trademark counsel, it is strongly recommended that an intent to use application for the new brand name be filed promptly at the US Trademark Office to protect it at the earliest time possible.

So, roll up those sleeves and let the branding begin!




Don’t Even Think About Advertising a SUPER BOWL Party!

Posted in Dilution, Famous Marks, Lanham Act, Litigation, Trademark

Written by: Susan Neuberger Weller

As we all know, Super Bowl XLIX will be played this Sunday in Phoenix, Arizona between the defending Champion Seattle Seahawks and the New England Patriots. There will be events of all kinds organized all around the country focused on this football game. If you are planning something, just remember: do not use “Super Bowl” by itself or in conjunction with other words or terms in any commercial promotions of any kind including your own events, third-party events, contests, games, product promotions, or sales. You just can’t do it. Continue Reading

The US Supreme Court Holds that Juries Should Decide the Issue of Trademark Tacking

Posted in Tacking, Trademark

Written by: Susan Neuberger Weller

In the first substantive trademark decision it has issued in a decade, the US Supreme Court, in Hana Financial, Inc. v. Hana Bank, case number 13-1211 (January 21, 2015), affirmed the Ninth Circuit by holding that whether two marks may be tacked for purposes of determining priority is a question for the jury.

The case involved two organizations providing financial services to individuals in the United States. The Respondent Hana Bank had been operating under that name in Korea since 1991, and first began to advertise its services to Korean expatriates in the US in 1994. Advertisements for those services in the US first appeared in Korean and in English under the name “Hana Overseas Korean Club,” and included the name “Hana Bank” in Korean. In 2000, it changed the name of “Hana Overseas Korean Club” to “Hana World Center,” and in 2002 began operating a bank in the United States under the name “Hana Bank.” This latter enterprise was its first physical presence in the United States. Continue Reading

“Copyright and Marriage Equality Act” Bills Introduced in both the House and Senate

Posted in Copyright, Transfer

Written by: Susan Neuberger Weller

On January 6, 2015, Sen. Patrick Leahy introduced Senate bill 23 entitled the “Copyright and Marriage Equality Act.” The bill would amend Section 101 of title 17 of the United States Code by striking the current definitions of “widow” and “widower” and replacing them with the following:

“An individual is the ‘widow’ or ‘widower’ of an author if the courts of the State in which the individual and the author were married (or, if the individual and the author were not married in any State but were validly married in another jurisdiction, the courts of any State) would find that the individual and the author were validly married at the time of the author’s death, whether or not the spouse had later remarried.”

The purpose of the amendment is to address the transfer of a copyright to an author’s spouse or other next of kin following the author’s death. There were five original cosponsors of the bill.

On January 9, 2015, Rep. Derek Kilmer introduced in the House a corresponding bill, H.R. 238. That bill had 19 original cosponsors.

Both bills have been referred to their respective Committees on the Judiciary. We will keep you posted on the status of any action on each bill.

The US Department of Justice Seeks to Intervene in the Washington Redskins’ Trademark Suit to Defend the Constitutionality of the Lanham Act

Posted in Disparaging Marks, Lanham Act, Section 2(a), Trademark, Trademark Trial and Appeal Board, Uncategorized

Written by: Susan Neuberger Weller

The Washington Redskins professional football team will soon not only be battling Native Americans over the registrability of the REDSKINS trademark, but will also have to cross swords with the US Government. Last week, the US Department of Justice filed a Notice of Intervention in the appeal of the US Trademark Trial and Appeal Board’s decision last summer to cancel the REDSKINS trademark registrations. As we reported in our earlier post, the Washington team raised in its appeal constitutional issues that could not be decided by the TTAB. These include the following:

  • Trademarks are constitutionally protected commercial speech and Section 2(a)’s provisions prohibiting the registration of “disparaging, “”contempt[uous]”, or “disreput[able]” aspects of a mark are  an unconstitutional, content-based restriction on speech that violates the First Amendment to the US Constitution.
  • Section 2(a) is facially overbroad and  unconstitutionally void for vagueness in violation of the First Amendment to the US Constitution since, inter alia, the terms “disparage,” “may disparage,” “contempt,” “disrepute,” and “may bring…into contempt or  disrepute” are not defined in the Lanham Act or its legislative history.
  • The cancellation of the REDSKINS registrations violate  the team’s due process rights provided by the Fifth Amendment to the US Constitution by unreasonably depriving the team of federally granted property rights that it has relied on for almost half a century.
  • The Board’s Order canceling the REDSKINS trademark registrations is an unconstitutional taking of Pro-Football’s property without just compensation in violation of the Takings Clause of the Fifth  Amendment to the US Constitution.

The Notice of Intervention states that the US Government will be defending the constitutionality of Section 2(a) of the Lanham Act, and is entitled to do so as a matter of right pursuant to the Federal Rules of Civil Procedure and statute.

As of this writing, no responsive pleadings have yet been filed by either the team or the Native Americans. Stay tuned.

Top Ten Reasons Why US Trademark Searches are Important to Every Business

Posted in Domain Name, Searching and Clearance, Trademark

 As we ring in the new year, we thought we would remind everyone why the importance of a comprehensive trademark search  for a new company name and for a new trademark cannot be overstated:

1. Any word in any language can function as a trademark depending on how it is used.

2. Every business has at least one company name, trade name, brand name, logo, or slogan it uses to advertise its goods or services, making it vulnerable to a claim of infringement if the use has not been cleared properly.

3. A Secretary of State’s clearance and registration of a name for a corporation or other business entity is NOT a defense to a claim of trademark infringement.

4. Unlike copyright infringement, trademark infringement can be innocent. Prior knowledge of a preexisting trademark is not required for infringement liability to exist.

5. Domain names alone do not create trademark or similar protected rights, but can violate trademark rights.

6. Marks do not need to be identical or used competitively in order to be infringing.

7. Famous marks and names should never be used even for completely unrelated purposes.

8. Unregistered common law marks are valid and fully enforceable in the United States.

9. There is no such thing as international or worldwide trademark rights. Trademark rights exist on a country-by-country basis. In most countries, the first to file a trademark application and obtain a registration owns the rights in that country. Use without registration is irrelevant. Foreign rights should be searched and/or applied for before any public announcements of expansion plans.

10. Trademarks are a use-it-or-lose-it asset. Unlike patents and copyrights, trademarks can exist forever if they are being used. Intent-to-use applications can be filed for trademarks for which there are plans underway but which may not be placed into actual use for, at least, four years.

A thorough trademark search is one of the best investments a company can make in a new endeavor. No one wants to invest time, money, and effort in a new name or mark only to find out later that all is lost, including  the initial  goodwill and reputation developed under that new name and mark.  So do not simply choose a new name or mark wisely, also search it well.